WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pentair, Inc. v. shanwei xu

Case No. D2015-2330

1. The Parties

The Complainant is Pentair, Inc. of Golden Valley, Minnesota, United States of America, represented by Roetzel & Andress LPA, United States of America.

The Respondent is shanwei xu of Beijing, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <cnpentair.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2015. On December 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On December 28, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on January 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2016. On January 10, 2016, the Respondent sent an email communication to the Center indicating he did not receive the Complainant’s request for English to be the language of the proceeding, and he did not agree with such request. The Response was filed with the Center on January 23, 2016.

The Center appointed Jonathan Agmon as the sole panelist in this matter on January 29, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On January 29, 2016, the Center received an unsolicited supplemental filing from the Complainant, which was brought to the Panel’s attention.

4. Factual Background

The Complainant is a United States company. The Complainant is a worldwide leader in the water industry offering pumps, pumps for swimming pools and spas, water storage tanks, water filters, storage equipment and more.

The Complainant is the owner of numerous trademark registrations for the PENTAIR mark around the world. For example: China Registration No. 3504316 – PENTAIR of December 28, 2007; United States No. 2573714 – PENTAIR of May 28, 2002; Taiwan Province of China Registration No. 93018235 - PENTAIR April 16, 2005, and many more.

Through extensive use around the world, the PENTAIR trademark has generated vast good will and has become well known and recognized with the Complainant.

The Complainant has also developed a presence on the Internet and is the owner of “Pentair”. For example: <pentair.com>, <pentairwater.com> and <pentairpool.com>.

The disputed domain name <cnpentair.com> was registered on January 23, 2011.

The disputed domain name resolved to a website which contained links to products competing with the Complainant. However, nowadays the disputed domain name resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is substantially identical and confusing similar to the Complainant’s PENTAIR trademark which has been in use since 1999 and registered as a mark since 2002 (and in Taiwan Province of China since 2004).

The Complainant further contends that that the disputed domain name directly incorporates the Complainant’s registered trademark PENTAIR, and the mere addition of the geographically descriptive designation “cn” is not sufficient to distinguish it from the Complainant’s trademark and domain names.

The Complainant further argues that the Respondent has intentionally used the Complainant’s PENTAIR trademark in order to attract Internet users to his website and that the Respondent is engaging in typo-squatting which is prohibited.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant further argues that the Respondent is not using the disputed domain name is connection with a bona fide offering of goods or services, nor is there any indication the Respondent is making demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant further argues that the website under the disputed domain name included links directing to websites allegedly offering the Complainant’s products. In this manner, the Complainant argues that the Respondent’s use of the disputed domain name to divert Internet users to sponsored links which are used in the sale and provision of pool and spa related goods and services, some feature the Complainant’s direct competitors.

The Complainant further argues that the Respondent is not known by the disputed domain name, nor does the Respondent claim to have made legitimate, noncommercial use of the disputed domain name.

The Complainant further argues that the Respondent is not affiliated with the Complainant in any manner.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith.

The Complainant further argues that the Respondent has, by using the disputed domain name, intentionally attempted to redirect Internet users seeking information the Complainant’s goods and services to a website displaying links to unrelated content, including that of the Complainant’s competitors.

The Complainant further argues that the Respondent is intentionally misleading consumers, luring them to other websites by making them believe that it affiliated with the Complainant.

The Complainant further argues that it has sent the Respondent a cease and desist letter which the Respondent avoided, and this is another indication of the Respondent’s bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent claims that his use of the disputed domain name <cnpentair.com> is made with the combination – “cnp”, “ent” and “air”, which are three “words” with different meaning. According to the Respondent, the disputed domain name has therefore, a completely different meaning.

The Respondent further argues that there is no relationship between the Complainant’s trademark and the disputed domain name. The Respondent further argues that the Complainant’s trademark rights and interests cannot be deprived of the right to use “cnp”, “ent”, “air” three-word combination.

The Respondent further argues that the time of registration of the disputed domain name is January 2011, and the time of obtaining the trademark of the Complainant is in early 2012, so he cannot be infringing the trademark rights of the Complainant.

The Respondent further argues that the meaning of <cnpentair.com> is: “cnp”, “ent”, “air” combination of words, used for the Respondent’s own business and he registered the disputed domain name to protect his business.

The Respondent further argues that the he did not act in bad faith, and he did not intend to sell the disputed domain name, or transfer to competitors to gain the interests of competitors.

The Respondent further argues that the Complainant did not use the <cnpentair.com> disputed domain name and therefore providing the disputed domain name to the Complainant would not be appropriate.

C. Additional Submissions

The Complainant has responded to the Respondent’s reply and demonstrated that it has started operating by the PENTAIR trademark as early as 1999.

The Complainant had also indicated that the Respondent does not have rights or legitimate interests in the disputed domain name as the registration of the disputed domain name was made in bad faith, since he operated the disputed domain name to offer for sale water filtration devices and similar products, all with links to website of the Complainant’s competitors.

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Although the Complainant was unable to locate a copy of the Registrant’s current Registration Agreement online, it requested that the language of the proceeding be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

a) The disputed domain name <cnpentair.com> consists of Latin-script letters, rather than Chinese characters;

b) According to the Complainant, the Respondent’s use of the disputed domain name to direct to webpages with English-language content indicates that the Respondent knows the English language and uses it for business purposes. The Respondent did not file counter-evidence to the Complaint, therefore the Panel finds that the Respondent will not be prejudiced if the decision is rendered in the English language;

c) The Respondent did not timely object to the Complainant’s request that English be the language of the proceeding;

d) All communications from the Center have been in both English and Chinese;

e) The Center made it clear it would accept a Response in either language, and seek to appoint a panel familiar with both languages;

f) The Respondent did in fact file a Response, demonstrating that he understood the claims being made against him.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The disputed domain name <cnpentair.com> is identical to the registered PENTAIR trademark apart from the addition of the geographical term “cn”, which is the International Standards Organization (ISO) country code for China. The disputed domain name integrates the Complainant’s trademark PENTAIR in its entirety, as a dominant element.

The addition the geographical term “cn” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s PENTAIR trademark as “cn” stands for country of China, where the Complainant also conducts business. It is clear that the most prominent element in the disputed domain name is the term “Pentair”. Consequently, this panel finds that the disputed domain name is confusingly similar to the Complainant’s PENTAIR trademark.

Previous UDRP panels have found that the mere addition of a not sufficiently differentiating element in the domain name does not avoid a finding of confusing similarity with trademark: “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark.” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709). Indeed, “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

Also, the addition of a generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is typically without legal significance since use of a gTLD is technically required to operate a domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.

Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the PENTAIR trademark, or a variation thereof.

The Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case. The Respondent did not raise any arguments pursuant to paragraph 4(a)(ii) of the Policy. The Respondent claimed he purchased the disputed domain name for his business, but failed to provide any evidence to support such allegation. The Respondent did not claim and the record does not reflect that the Respondent is commonly known by the disputed domain name. The Respondent also failed to provide any evidence of a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the PENTAIR trademark since at least the year 1999. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant provided evidence to demonstrate its trademark’s vast goodwill. “It is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Names at issue might be of some type of economic advantage” (see Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

The Complainant submitted evidence showing that the Respondent was offering goods similar to those offered by the Complainant. Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or online location to which the disputed domain name resolves, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location to which the disputed domain name resolves. Thus, the Respondent’s offering of goods (at one time) similar to those offered by the Complainant under the disputed domain name is another evidence of bad faith.

As discussed above, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

The Respondent’s use of the distinctive trademark of the Complainant at the disputed domain name is also suggestive of the Respondent’s bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with a longstanding reputation is intended to make an impression of an association with the Complainant (see Swarovski Aktiengesellschaft v. fan wu, WIPO Case No. D2012-0065).

Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has responded by mentioning that the disputed domain name is a combination of three words: “cnp”, “ent”, “air”, for the Respondent’s own business. The Respondent did not submit any evidence to support this claim. The Panel takes into consideration also the Complainant’s evidence showing that the disputed domain name offered for sale products of the Complainant’s competitors. This leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent with knowledge of the Complainant and in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.

Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith.’” (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

From the evidence submitted by the Complainant it is clear that the Respondent used the disputed domain name to promote other products along with alleged Complainant’s products. Using the disputed domain name to promote these services associated to the products offered by the Complainant, without the Complainant’s authorization, is evidence that the Respondent registered and was using the disputed domain name with knowledge of the Complainant and its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off on the value of these. The Respondent’s actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.)

Considering the above, the Panel finds that the Respondent’s attempt to attract, for commercial gain, Internet users to his website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.

Lastly, the Complainant sent a cease and desist letter to the Respondent without success. The Respondent failed to reply to the Complainant’s letter. This constitutes additional evidence of the Respondent’s bad faith (see Alstom v. Yulei, WIPO Case No. D2007-0424).

Based on the evidence presented to the Panel, the distinctiveness of the Complainant’s trademark, the Respondent’s use of the disputed domain name, and the failure of the Respondent to respond to the cease and desist letter the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cnpentair.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: February 11, 2016